Case 5:19-cv-00036-RWS Document 485-8 Filed 08/05/20 Page 1 of 104 PageID #: 26581
`Case 5:19-cv-00036—RWS Document 485-8 Filed 08/05/20 Page 1 of 104 PageID #: 26581
`
`EXHIBIT G
`
`EXHIBIT G
`
`

`

`
`
`Case 5:19-cv-00036-RWS Document 485-8 Filed 08/05/20 Page 2 of 104 PageID #: 26582
`Trials@uspto.gov
`
`
` Paper No. 11
`571.272.7822
`
`
`
` Entered: July 15, 2020
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`
`MAXELL, LTD.,
`Patent Owner.
`____________
`
`IPR2020-00200
`Patent 10,084,991 B2
`____________
`
`
`Before MICHAEL R. ZECHER, KEVIN C. TROCK, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`TROCK, Administrative Patent Judge.
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`

`

`Case 5:19-cv-00036-RWS Document 485-8 Filed 08/05/20 Page 3 of 104 PageID #: 26583
`IPR2020-00200
`Patent 10,084,991 B2
`
` INTRODUCTION
`
`A.
`
`Background
`Apple Inc. (“Petitioner”) filed a Petition, Paper 1 (“Pet.” or
`“Petition”), requesting an inter partes review (“IPR”) of claims 1–5 and 8–
`12 (the “challenged claims”) of U.S. Patent No. 10,084,991 B2 (Ex. 1001,
`“the ’991 patent”). Maxell, Ltd. (“Patent Owner”) filed a Preliminary
`Response, Paper 6 (“Prelim. Resp.”). Pursuant to an Order, Paper 7,
`authorizing Petitioner to file a Reply to Patent Owner’s Preliminary
`Response and Patent Owner to file a Sur-reply, Petitioner filed a Reply,
`Paper 8 (“Reply”), and Patent Owner filed a Sur-reply, Paper 10 (“Sur-
`reply”).
`An inter partes review may not be instituted “unless . . . there is a
`reasonable likelihood that the petitioner would prevail with respect to at least
`1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon
`consideration of the Petition, the Preliminary Response, the Reply, the Sur-
`reply, and the evidence of record, we determine that Petitioner has shown a
`reasonable likelihood that it would prevail in showing the unpatentability of
`at least one of the challenged claims. Accordingly, we institute an inter
`partes review.
`
`B.
`
`Real Party in Interest
`Each party identifies itself as the only real party in interest. Pet. 76;
`Paper 4, 1.
`
`C.
`
`Related Proceedings
`According to the parties, the ’991 patent is the subject of the
`following action: Maxell, Ltd. v. Apple Inc., 5:19-cv-00036-RWS (E.D.
`
`2
`
`

`

`Case 5:19-cv-00036-RWS Document 485-8 Filed 08/05/20 Page 4 of 104 PageID #: 26584
`IPR2020-00200
`Patent 10,084,991 B2
`Tex.) filed March 15, 2019 (the “District Court Action”). Pet. 76; Paper 4,
`1.
`
`Petitioner also identifies U.S. Patent Application No. 15/631,298 filed
`June 23, 2017 (now U.S. Patent No. 10,070,099), U.S. Patent Application
`No. 15/215,839 filed July 21, 2016 (now U.S. Patent No. 9,723,268), U.S.
`Patent Application No. 14/811,048 filed July 28, 2015 (now U.S. Patent No.
`9,432,618), U.S. Patent Application No. 13/723,312 filed December 21,
`2012 (now U.S. Patent No. 9,124,758), U.S. Patent Application No.
`12/457,257 filed June 4, 2009 (now U.S. Patent No. 8,363,087), U.S. Patent
`Application No. 16/110,331 filed August 23, 2018 (now U.S. Patent No.
`10,389,978), and U.S. Patent Application No. 16/506,100 filed July 9,
`2019—all of which are in the chain of priority of the ’991 patent. Pet. 76.
`
`The ’991 Patent (Ex. 1001)
`D.
`The ’991 patent describes a videophone system that “selectively sets a
`
`television (TV) broadcast program viewing function mode and videophone
`function mode,” with the videophone function mode “decoding a
`videophone signal received from a distant party to thereby display on the
`screen [of the videophone system] an image of the distant party using the
`screen and speakers” and also “encoding a video signal from a camera [of
`the videophone system] and a voice signal from a microphone [of the
`videophone system] to generate a videophone signal, which is sent to the
`distant party via a network.” Ex. 1001, Abstr. The ’991 patent’s
`videophone system uses a plurality of videophone function-added TV
`receivers linked together via a network, for enabling users to make
`videophone calls between any two of the videophone function-added TV
`receivers. Id. at 2:56–62.
`
`3
`
`

`

`Case 5:19-cv-00036-RWS Document 485-8 Filed 08/05/20 Page 5 of 104 PageID #: 26585
`IPR2020-00200
`Patent 10,084,991 B2
` Figure 1 of the ’991 patent, reproduced below, illustrates a
`videophone function-added TV receiver set. Id. at 6:47–50.
`
`
`
`
`Figure 1, above, shows videophone function-added TV receiver 1,
`which has display screen 2, loudspeaker module 3, video camera 4,
`microphone 5, communications network cable 6, and wireless remote control
`device 7. Id. at 7:32–40. Videophone function-added TV receiver 1 is
`controlled by remote control 7 and, by manual operation of the remote
`control, receives digital broadcast programs, downloads video-on-
`demand (VOD) contents and/or makes a videophone call with another
`videophone function-added TV receiver. Id. at 7:62–67.
`Figure 2, reproduced below, illustrates an electrical/electronic circuit
`configuration of the videophone function-added TV receiver shown in
`Figure 1. Id. at 6:51–54.
`
`
`4
`
`

`

`Case 5:19-cv-00036-RWS Document 485-8 Filed 08/05/20 Page 6 of 104 PageID #: 26586
`IPR2020-00200
`Patent 10,084,991 B2
`
`
`
`
`Figure 2, above, shows an example of an electrical/electronic circuit
`configuration of videophone function-added TV receiver 1, which includes
`display panel 8, antenna 9, TV broadcast tuner 10, decoder 11, processor 12,
`hypertext makeup language (HTML) browser 13, inbound call detection
`device 14 for videophone communications, network interface (I/F) 15,
`remote control signal receiver 16, storage unit 17 such as a hard disk drive
`(HDD) or solid-state disk (SSD), and encoder 18. Id. at 8:23–42.
`
`5
`
`

`

`Case 5:19-cv-00036-RWS Document 485-8 Filed 08/05/20 Page 7 of 104 PageID #: 26587
`IPR2020-00200
`Patent 10,084,991 B2
`Figure 3 of the ’991 patent, reproduced below, illustrates a video
`telephone system using two videophone function-added TV receivers. Id. at
`6:55–57.
`
`
`
`
`Figure 3, above, shows a video telephone system including
`
`videophone function-added TV receiver 1, another (distant party’s)
`videophone function-added TV receiver 1’ on the other end of a
`communication line (for performing videophone communication with
`videophone function-added TV receiver 1), telephone server 20, and VOD
`server 21, linked together via network 6. Id. at 9:28–49. The ’991 patent
`describes the operation of the video telephone system of Figure 3 as follows:
`[T]he TV remote control 7 . . . has the “TV” button 7b for setting
`the videophone function-added TV receiver 1 in the TV
`broadcast program viewing function mode, the “VOD” button 7c
`for setting the videophone function-added TV receiver 1 in the
`VOD function mode, and the “Phone” button 7d for setting the
`videophone function-added TV receiver 1 in the videophone
`function mode.
` . . .
`When the videophone function-added TV receiver 1 is presently
`set in the TV broadcast program viewing function mode, the
`decoder 11 is set by the processor 12 in the state for execution of
`the TV program-use decode function.
` . . .
`
`
`
`6
`
`

`

`Case 5:19-cv-00036-RWS Document 485-8 Filed 08/05/20 Page 8 of 104 PageID #: 26588
`IPR2020-00200
`Patent 10,084,991 B2
`When the “VOD” button 7b (FIG. 4) of the remote control 7 is
`operated, the decoder 11 executes the VOD-use decode function
`under control of the processor 12.
` . . .
`When the “Videophone” button 7c (FIG. 4) of the remote control
`7 is depressed, the decoder 11 is set in a state for execution of the
`videophone-use decode function under setup control of the
`processor 12. Simultaneously, the processor 12 renders the
`camera 4 and microphone 5 plus encoder 18 operative and sets
`up the videophone function mode. Note that the inbound call
`detector 14 is always in the state capable of detecting an
`incoming telephone call from the other-side videophone
`function-added TV receiver 1’ (FIG. 3) even when the
`videophone function-added TV receiver 1 is in the power-off
`state.
`Then, a video signal by means of image pickup of the camera and
`an audio signal indicative of voice sounds as input to the
`microphone 5 are supplied to the encoder 18 and subjected to
`compression processing (encoding) which is pursuant to
`videophone telecommunications so that a videophone signal
`which is obtained thereby is sent from the network I/F 15 via
`network 6 to the other-side videophone function-added TV
`receiver 1’ (FIG. 3). A videophone signal from the other-side
`videophone function-added TV receiver 1’ is received by the
`network I/F 15 and supplied to the decoder 11 so that a video
`signal and audio signal thereof are subjected to expansion
`processing (decoding), causing such decoded signals to be
`supplied to display panel 8 and speakers 3. This enables
`videophone
`telecommunication between
`the videophone
`function-added TV receiver 1 and the other-side videophone
`function-added TV receiver 1’.
`
`Id. at 10:55–65, 12:11–15, 12:34–38, 13:20–46. The ’991 patent further
`describes the operation of the video telephone system after completion of the
`videophone call as follows:
`After completion of the videophone call, when the user depresses
`the “Stop” button 7n of the remote control 7, the processor 12
`renders the decoder 11 and HTML browser 13 inoperative. As
`
`7
`
`

`

`Case 5:19-cv-00036-RWS Document 485-8 Filed 08/05/20 Page 9 of 104 PageID #: 26589
`IPR2020-00200
`Patent 10,084,991 B2
`the decoder 11 goes off, the processor 12 renders the camera 4
`and microphone 5 plus encoder 18 inoperative. . . . Thus, the
`video phone function mode is terminated. . . .
`In the TV program-use decode function mode in which the
`videophone function-added TV receiver 1 receives a digital
`broadcast program, when the “Phone” button 7d of remote
`control 7 is pressed causing it to be switched to this videophone-
`use decode function mode, the processor 12 is responsive to
`completion of a videophone call by manual operation of the
`“Stop” button 7n of remote control 7, for providing control so
`that the decoder 11 changes its operation mode from the
`videophone-use decode function execution mode to the state for
`execution of the TV program-use decode function and then
`returns to the digital broadcast program reception state.
`
`
`Id. at 16:10–31. The ’991 patent explains that its videophone function-
`added TV receiver displays a video image for a videophone call using the
`display screen and loudspeaker that are inherently used for digital TV
`broadcast programs, so that “it is possible for a user to start a phone call and
`finish the call without having to move from a place at which s/he is enjoying
`a digital TV broadcast program.” Id. at 6:25–32. Additionally, “upon
`completion of the phone call, the decoder and encoder are automatically
`rendered inoperative without requiring the user to perform manual
`operations.” Id. at 6:32–37.
`
`E.
`
`Challenged Claims
`Petitioner challenges claims 1–5 and 8–12 of the ’991 patent. Pet. 1.
`Claims 1 and 8 of the challenged claims are independent. Claims 1 and 8
`are substantially similar to each other, where claim 8 is written as a method
`claim and claim 1 is written as an apparatus claim. Claim 1 is illustrative.
`1. [Preamble] A communication apparatus for transmitting and
`receiving digital information to and from another communication
`apparatus, comprising:
`
`8
`
`

`

`Case 5:19-cv-00036-RWS Document 485-8 Filed 08/05/20 Page 10 of 104 PageID #: 26590
`IPR2020-00200
`Patent 10,084,991 B2
`[1(a)] a network interface configured to receive first digital
`information which is received from a contents server which
`is coupled to the communication apparatus via the network
`interface and second digital information from the another
`communication apparatus;
`[1(b)] a camera configured to generate video information which is
`included in third digital information;
`[1(c)] a display configured to display at least the first and the
`second digital information; and
`[1(d)] a processor;
`[1(e)] wherein when the processor receives an inbound videophone
`call notice while displaying the first digital information on
`the display, the processor pauses the displaying of the first
`digital information and renders the camera operative;
`[1(f)] wherein the processor outputs the third digital information to
`the another communication apparatus and displays the
`second digital information of the videophone call on the
`display; and
`[1(g)] wherein when the processor receives an input for stopping
`the videophone call, the processor stops output of the third
`digital information and stops the camera.
`
`
`Ex. 1001, 32:39–63, 33:28–51 (numbering designated by Petitioner; see Pet.
`78–80 (“CLAIMS LISTING APPENDIX”)).
`
`F.
`
`Evidence
`Petitioner relies upon the following evidence:
`(1) U.S. Patent No. 7,565,680 B1, issued July 21, 2009 (“Asmussen”)
`(Ex. 1004);
`(2) U.S. Patent No. 7,548,255 B2, issued June 16, 2009 (“Bear”)
`(Ex. 1005);
`(3) U.S. Patent Publication No. 2007/0139514 A1, published June 21,
`2007 (“Marley”) (Ex. 1006);
`(4) U.S. Patent No. 5,940,484, issued Aug. 17, 1999 (“DeFazio”)
`(Ex. 1007);
`
`9
`
`

`

`Case 5:19-cv-00036-RWS Document 485-8 Filed 08/05/20 Page 11 of 104 PageID #: 26591
`IPR2020-00200
`Patent 10,084,991 B2
`(5) U.S. Patent Publication No. 2004/0031064 A1, published Feb. 12,
`2004 (“Lindstrom”) (Ex. 1008); and
`(6) Declaration of Dr. Andrew Lippman. Ex. 1003.
`
`G.
`
`35 U.S.C. § References
`
`Asserted Grounds of Unpatentability
`
`Claims
`Challenged
`1, 8
`
`103(a)
`
`Asmussen, Bear
`
`1–5, 8–12
`
`5, 12
`
`1, 8
`
`1–5, 8–12
`
`5, 12
`
`
`
`103(a)
`
`103(a)
`
`103(a)
`
`103(a)
`
`103(a)
`
`Asmussen, Bear, Marley
`
`Asmussen, Bear, Marley, DeFazio
`
`Asmussen, Bear, Lindstrom
`
`Asmussen, Bear, Lindstrom, Marley
`
`Asmussen, Bear, Lindstrom, Marley, DeFazio
`
` ANALYSIS
`
`A.
`
`35 U.S.C. § 314(a)
`Patent Owner argues that the Petition should be denied under
`35 U.S.C. § 314(a) “because the invalidity arguments [Petitioner] raises here
`will be resolved in the co-pending District Court Action long before this
`proceeding will conclude.” Prelim. Resp. 2. Patent Owner argues, “the
`challenged claims are substantially the same in substance and scope as those
`asserted in the District Court Action.” Id. at 3. Patent Owner asserts, “the
`jury trial adjudicating the validity of the ’991 Patent will conclude nine
`months before any Final Written Decision issues in this proceeding.” Id.
`According to Patent Owner, “instituting an IPR in this circumstance would
`
`10
`
`

`

`Case 5:19-cv-00036-RWS Document 485-8 Filed 08/05/20 Page 12 of 104 PageID #: 26592
`IPR2020-00200
`Patent 10,084,991 B2
`needlessly duplicate the District Court Action, and unnecessarily waste the
`Board’s resources” because all the factors considered in Apple Inc. v. Fintiv,
`Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential)
`(“Fintiv”), “strongly weigh in favor of denying institution of this Petition.”
`Id. at 5–6.
`Petitioner disagrees. Petitioner argues that “[t]he six factors set forth
`in [Fintiv] strongly favor institution.” Reply 1.
`35 U.S.C. § 314(a) states that
`[t]he Director may not authorize an inter partes review to be
`instituted unless the Director1 determines that the information
`presented in the petition filed under section 311 and any response
`filed under section 313 shows that there is a reasonable likelihood that
`the petitioner would prevail with respect to at least 1 of the claims
`challenged in the petition.
`
`Under § 314(a), the Director has discretion to deny institution of an inter
`partes review. Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140
`(2016) (“[T]he agency’s decision to deny a petition is a matter committed to
`the Patent Office’s discretion.”).
`In NHK Spring Co., Ltd. v. Intri-Plex Techs., Inc., IPR2018-00752,
`Paper 8 (PTAB Sept. 12, 2018) (precedential) (“NHK”), the Board exercised
`its discretion under § 314(a) to deny a petition upon determining that
`institution would be an inefficient use of Board resources. NHK, Paper 8 at
`19–20. In particular, the Board determined that it was proper to exercise
`discretion to deny institution in a case having a parallel district court
`proceeding involving (i) the same patent/parties, (ii) the same claim
`
`
`1 “The Board institutes the trial on behalf of the Director.” 37 C.F.R.
`§ 42.4(a).
`
`11
`
`

`

`Case 5:19-cv-00036-RWS Document 485-8 Filed 08/05/20 Page 13 of 104 PageID #: 26593
`IPR2020-00200
`Patent 10,084,991 B2
`construction, (iii) the same prior art references, (iv) the same arguments as in
`the district court proceeding, which was scheduled to be completed before a
`final decision would have been due in the Board proceeding. See id. at 19–
`20. The Board determined that these circumstances supported denial of the
`petition under § 314(a), considering the America Invents Act’s (“AIA’s”)
`objective “to provide an effective and efficient alternative to district court
`litigation.” Id. at 20 (quoting General Plastic Industrial Co. v. Canon
`Kabushiki Kaisha, IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017)
`(precedential)).
`In Fintiv, the Board indicated it will assess the following factors
`pertaining to a related parallel district court proceeding, in determining
`whether to exercise its discretion to institute review:
`whether the court granted a stay or evidence exists that one
`1.
`may be granted if a proceeding is instituted;
`proximity of the court’s trial date to the Board’s projected
`2.
`statutory deadline for a final written decision;
`investment in the parallel proceeding by the court and the
`3.
`parties;
`overlap between issues raised in the petition and in the
`4.
`parallel proceeding;
`whether the petitioner and the defendant in the parallel
`5.
`proceeding are the same party; and
`other circumstances that impact the Board’s exercise of
`6.
`discretion, including the merits.
`See Fintiv, Paper 11 at 5–6.
`For the reasons discussed in detail below, we do not agree with Patent
`Owner that the circumstances of this case warrant discretionary denial of
`institution under § 314(a).
`
`12
`
`

`

`Case 5:19-cv-00036-RWS Document 485-8 Filed 08/05/20 Page 14 of 104 PageID #: 26594
`IPR2020-00200
`Patent 10,084,991 B2
`1. Whether the court granted a stay or evidence exists that one
`may be granted if a proceeding is instituted
`Although Petitioner moved for a stay in the underlying litigation (see
`Reply 6; Ex. 1045), the court recently denied Petitioner’s motion. Sur-reply
`2–3; Ex. 1052. Notably, the court denied the motion without prejudice and
`stated that it could not say, in the event that we instituted this IPR, whether
`“the late stage [of proceedings] would necessarily outweigh the potential
`simplification of issues following institution decisions” in this and other
`inter partes review cases. Ex. 1052, 6 (citing a prior case by the court in
`which a stay was granted three weeks before trial upon the institution of
`IPRs). In other words, the court signaled its willingness to entertain a
`renewed motion for stay from Petitioner if we were to grant institution.
`Notwithstanding, the court stated that, were a renewed motion for stay
`requested, the late stage of proceedings “will certainly weigh against
`granting a stay.” Id. Given the court’s inclination to reconsider a motion for
`stay for the potential simplification of issues, but also considering the court’s
`comment about how the late stage of proceedings would affect its
`consideration of any such renewed motion, we view this factor as neutral.
`2. Proximity of the court’s trial date to the Board’s projected
`statutory deadline for a final written decision
`Trial in the underlying litigation is currently set for October 26, 2020.
`Reply 7; Sur-reply 1; Ex. 1052, 4. Nevertheless, Petitioner contends
`“[l]itigation will continue” after any Final Written Decision here. Reply 7.
`Petitioner notes that it filed a petition for writ of mandamus related to the
`court’s denial of Petitioner’s motion to transfer the underlying litigation. Id.
`Petitioner also notes the COVID-19 pandemic may affect the trial schedule.
`Id.
`
`13
`
`

`

`Case 5:19-cv-00036-RWS Document 485-8 Filed 08/05/20 Page 15 of 104 PageID #: 26595
`IPR2020-00200
`Patent 10,084,991 B2
`Patent Owner argues that trial “will be complete eight months before a
`Final Written Decision issues” here and that a delay in the trial date is
`unlikely. Sur-reply 3. Patent Owner cites a standing order in the court of
`the underlying litigation “to keep cases moving” despite the COVID-19
`pandemic. Id. at 4 (quoting Ex. 2017). And, according to Patent Owner,
`even if the trial date were delayed by three months, the trial would still
`precede the Final Written Decision by six months. Id. at 3. The U.S. Court
`of Appeals for the Federal Circuit recently denied a petition for writ of
`mandamus related to the motion to transfer. In re Apple Inc., No. 2020-115,
`2020 WL 2125340 (Fed. Cir. Apr. 22, 2020).
`The trial in the underlying litigation is currently set to occur months
`before any Final Written Decision in this case will issue. Although we
`consider delays due to the COVID-19 pandemic to be a real possibility
`despite the court’s standing order, we agree with Patent Owner that even a
`delayed trial might precede a Final Written Decision. This factor favors the
`exercise of discretionary denial.
`3. Investment in the parallel proceeding by the court and the
`parties
`Petitioner contends that, aside from claim construction proceedings,
`“the district court has not invested other substantive efforts and the litigation
`is not ‘advanced.’” Reply 8. Petitioner notes that summary judgment is still
`months away and fact discovery and depositions are ongoing. Id.
`According to Petitioner, the court is not likely to analyze validity until trial.
`Id.
`
`As evidence of the court’s investment in the underlying litigation
`towards the issues of invalidity, Patent Owner highlights the court’s claim
`construction hearing and order and its rulings on Petitioner’s motion to
`
`14
`
`

`

`Case 5:19-cv-00036-RWS Document 485-8 Filed 08/05/20 Page 16 of 104 PageID #: 26596
`IPR2020-00200
`Patent 10,084,991 B2
`dismiss and motion to transfer. Sur-reply 5 (citing Exs. 2005–2008). Patent
`Owner also notes that fact discovery has closed and that expert discovery is
`underway and was expected to close June 25, 2020. Id. at 6 (citing
`Exs. 2018–2019).
`At least some of the work underway or already completed in the
`underlying litigation may have relevance to issues in the Petition, including
`claim construction and expert discovery. Patent Owner’s arguments directed
`to the District Court’s rulings on the motion to dismiss or the motion to
`transfer provide little probative value concerning the court’s investment in
`the invalidity issues raised there. Considering that some of the investment
`by the court and the parties in the underlying litigation may be relevant to
`issues in this case, we find this factor slightly favors the exercise of
`discretionary denial.
`4. Overlap between issues raised in the petition and in the parallel
`proceeding
`Patent Owner asserts “[t]he scope of [Petitioner’s] challenge to the
`’991 Patent’s validity in this proceeding is substantially the same as in the
`District Court Action” because the claims challenged by Petitioner “cover all
`the asserted claims against [Petitioner] in the District Court [A]ction,” and
`“[t]he prior art that [Petitioner] relies upon in its Petition is the same, or
`substantially the same, as the prior art at issue in the District Court Action.”
`Prelim. Resp. 13; see also Sur-reply 6–9. Patent Owner argues, “no
`meaningful distinction exists between [Petitioner’s] references and grounds
`used in the Petition versus those in the District Court Action.” Sur-reply 7.
`Indeed, Patent Owner argues, “the very same issues will be decided by a jury
`at the trial in the District Court Action a mere three months after the Board’s
`Institution Decision.” Prelim. Resp. 14.
`
`15
`
`

`

`Case 5:19-cv-00036-RWS Document 485-8 Filed 08/05/20 Page 17 of 104 PageID #: 26597
`IPR2020-00200
`Patent 10,084,991 B2
`Petitioner asserts the Petition presents different grounds than the
`District Court Action and challenges different claims based on different art.
`Reply 9–10. In particular, Petitioner asserts “[Patent Owner] only asserts
`dependent claim 4 (depending from claims 1–3) in the litigation” while
`“[t]he Petition challenges claims 1–5 and 8–12, resulting in 9 claims
`challenged in the Petition and not asserted by [Patent Owner], including
`both independent claims 1 and 8.” Id. at 9.
`As part of the analysis of overlapping issues, it is helpful to consider
`the parties’ recent efforts in the District Court Action to narrow the issues at
`trial. On March 17, 2020, Patent Owner made a Final Election of Asserted
`Claims (Ex. 2010) in which it elected to assert only dependent claim 4 of the
`’991 patent against Petitioner. Id. at 1. On April 7, 2020, Petitioner made a
`Final Election of Prior Art (Ex. 2011) to assert only the combination of
`Asmussen and Allen2 “for the elected claim [4]” of the ’991 patent. Id. at 1,
`4. If no other claims of the ’991 patent are being contested at trial, then only
`the infringement and validity of claim 4 will be decided in the District Court
`Action with respect to the ’991 patent.3
`
`
`2 U.S. Patent Publication No. 2003/0041333 A1, published Feb. 27, 2003
`(“Allen”). Despite the parties’ arguments with respect to Allen in this
`proceeding, see, e.g., Prelim. Resp. 15–16; Reply 9, it does not appear that
`either party made Allen an exhibit of record. Therefore, we have entered a
`copy of Allen into the record as Exhibit 3001.
`3 We recognize that claim 4 depends serially from claims 3, 2, and 1, and in
`order to decide the validity of claim 4, the trier of fact in the District Court
`Action would necessarily consider the application of the prior art to the
`limitations of claims 1–3. However, we also recognize that based on the
`parties’ final elections, the validity of claims 1–3 will not be decided in the
`District Court Action because the infringement and validity of those claims
`are not being contested by the parties in that proceeding.
`16
`
`

`

`Case 5:19-cv-00036-RWS Document 485-8 Filed 08/05/20 Page 18 of 104 PageID #: 26598
`IPR2020-00200
`Patent 10,084,991 B2
`We agree with Petitioner that there is not complete overlap in the
`claims being asserted in the underlying litigation and in this proceeding.
`Here, Petitioner challenges the patentability of claims 1–5 and 8–12. Pet. 8.
`Patent Owner now only asserts dependent claim 4 in the underlying
`litigation. Ex. 2010, 1. This distinction is material because in this
`proceeding, the patentability of ten claims would be decided (claims 1–5 and
`8–12) at trial, whereas in the District Court Action, only the validity of the
`single asserted claim, dependent claim 4, would ostensibly be decided at
`trial. At most, even when considering that the validity of dependent claim 4
`would necessarily require the trier of fact in the District Court Action to
`consider the application of the prior art to the limitations of claims 1–3, there
`is an overlap of four claims between the two proceedings.
`In addition, dependent claim 5 recites “wherein when the processor
`receives an input for making an outbound videophone call to the another
`communication apparatus, the processor renders the camera and microphone
`operative and displays information indicating the outbound videophone call
`on the display calling message.” Ex. 1001, 33:13–19. Dependent claim 12
`recites a similar limitation. Id. at 34:3–9. These limitations are at issue in
`this proceeding, but not at issue in the District Court Action. Stated
`differently, these limitations, which focus on making an outbound
`videophone call, raise a substantively different issue than the limitations of
`claims 1–4, which primarily focus on receiving an inbound videophone call.
`We do not find compelling Patent Owner’s assertion that “the very
`same issues will be decided by a jury” in the District Court Action. See
`Prelim. Resp. 14; see also Sur-reply 9. To support its position, Patent
`Owner provides a table of “a sample comparison of the evidence cited in the
`Petition allegedly supporting [the] unpatentability of Claim 1” to the
`
`17
`
`

`

`Case 5:19-cv-00036-RWS Document 485-8 Filed 08/05/20 Page 19 of 104 PageID #: 26599
`IPR2020-00200
`Patent 10,084,991 B2
`evidence cited by Petitioner in its preliminary invalidity contentions in the
`District Court Action. See Prelim. Resp. 14–15 (citing Pet. 17–45;
`Ex. 1003; Ex. 2013, 1–54). However, Patent Owner does not explain how a
`comparison of numerous string citations from Asmussen only against the
`limitations of independent claim 1 results in Patent Owner’s conclusion that
`“the very same issues will be decided by a jury in the District Court Action.”
`See Prelim. Resp. 13–14.
`Nor do we find compelling Patent Owner’s assertion that “[t]he prior
`art that [Petitioner] relies upon in its Petition is the same, or substantially the
`same, as the prior art at issue in the District Court Action.” Prelim. Resp.
`13. In this proceeding, Petitioner is relying on Asmussen, Bear, Marley,
`DeFazio, and Lindstrom, whereas in the District Court Action, Petitioner is
`relying on Asmussen and Allen only.
`Patent Owner argues that “[w]ith respect to Allen, no meaningful
`distinction can be made relative to [Petitioner’s] secondary references used
`in the [P]etition, Bear, Lindstrom, Marley, and DeFazio.” Prelim. Resp. 15;
`Sur-reply 7. Patent Owner argues, for example, that Petitioner is using
`Marley to disclose “the processor restarts the displaying of the first digital
`information,” as recited in claim 2. Prelim. Resp. 15 (citing Pet. 50–53).
`Patent Owner argues that “[t]his is the exact same way [Petitioner] is relying
`on Allen in the District Court Action.” Prelim. Resp. 15–16 (citing Pet. 52–
`53; Ex. 2013, 62).
`Petitioner responds by arguing, “[i]t is insufficient to merely argue
`both references teach the same limitation—of course they do. More
`importantly, because these are separate references with different teachings,
`the motivations to combine will be different and distinct, thus presenting
`unique grounds to the Board not addressed in the litigation.” Reply 10.
`
`18
`
`

`

`Case 5:19-cv-00036-RWS Document 485-8 Filed 08/05/20 Page 20 of 104 PageID #: 26600
`IPR2020-00200
`Patent 10,084,991 B2
`For purposes of understanding what issues a finder of fact would face
`with respect to applications of prior art, such as Allen and Marley, it is
`helpful to consider what, precisely, is being disclosed by the prior art.
`Marley, for example concerns:
`[a] system for initiating, receiving, and storing video telephony
`calls via a broadband television network. The system provides
`for the integration of all video telephony functions into the user-
`friendly platform of a residential set-top box which also provides
`standard cable television and digital video recorder functions.
`Ex. 1006, Abstr.
`In particular, with respect to claim 2, Petitioner relies on Marley’s
`disclosure of:
`set top box 100 with integrated video telephone functionality and
`“networked via the cable television infrastructure…to additional
`residential locations.” [Ex. 1006 ¶ 16]. The set top box has
`“processing capabilities, specifically directed to controlling and
`managing video telephone functions.” [Id. ¶ 15]. The set top box
`includes a primary audio/video processor (PAVP) that “pause[s]
`any programming presently being viewed on the monitor” when
`an incoming video telephone call is accepted by a user. [Id. ¶ 22].
`The PAVP stores the paused programming in “DVR memory
`116 for viewing after the termination of the video call.” [Id.].
`After termination of the video telephone call, the PAVP
`“restore[s] normal television viewing, thereby allowing the
`calling and called parties to resume real time program viewing,
`or recall the paused programming from DVR memory (116, 316)
`for viewing (519).”
`Pet. 51 (quoting Ex. 1006 ¶ 22; citing